I want to share an excerpt from a concerning UDRP decision involving the Rufino.com domain name. The UDRP was filed at the National Arbitration Forum (NAF) by Constellation Brands, Inc. (which owns a subsidiary called Ruffino). The three-person panel ruled in favor of the complainant in this UDRP, and the domain name will be transferred unless the domain owner opts to litigate.
What stood out to me in the decision is the section covering Rights or Legitimate Interests in the domain name. From what I am reading, it looks like the complainant argues that domain name parking is passive usage of the domain name, and it seems like the panel agreed with that. Here are the two paragraphs that concern me most (via UDRPSearch.com):
“Complainant asserts that the parked resolving website is evidence that Respondent lacks rights and legitimate interests in the mark. Parking a website continuously is considered a passive use under the policy and is evidence of a lack of legitimate interests in the domain name. See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest). Here, Respondent admits that it has “continuously parked the domain name with a reputable aggregator, , which puts links up to related referenced sites. It is a parked page with links, as on all parked pages, to various other websites.” Complainant has provided screenshots of the resolving website which displays hyperlinks such as “Wine.com,” “Facebook Video App,” and “A Forex”. Furthermore, the website displays a notice that the webpage was “generated by the domain owner using Sedo Domain Parking.” Therefore, the Panel agrees that Respondent lacks a legitimate interest in the disputed domain name.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent has failed to make an active use of the resolving website. As stated above, a parked website constitutes passive use of a domain name. Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005). Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Complainant has provided a screenshot of Respondent’s inactive, parked webpage. The Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ ¶4(c)(i) or (iii).”
I have been under the impression that UDRP panels consider generating revenue via advertising on parked pages to be a legitimate business model. Sure, a parked domain name may not be
According to a report on Fox 13 (the Tampa, Florida Fox affiliate station), Ebay is allegedly bullying a website called NatureBay. It would appear Ebay has an issue with the “Ebay” that is found in the NatureBay branding. The NatureBay.com domain name registration dates back to July of 2009, according to a DomainTools Whois search.
People occasionally email me to ask about the legitimacy of owning and using a domain name with an obvious trademark. I almost always tell these people “it depends” and refer them to a lawyer specializing in the field of intellectual property. Some cases are pretty cut and dry in favor of the trademark holder, and other cases may seem cut and dry but go in favor of the domain owner.